EU Trade Marks – Non-Use

An EU registered trade mark (EUTM) becomes subject to “use requirements” 5 years after registration. This means that if the mark is not put to genuine use: 

  1. in the form in which it is registered or a form which does not alter the distinctive character of the mark;
  2. in relation to the goods and services for which it is registered; and
  3. in the EU

within 5 years of the date of registration (or any subsequent 5 year period) it becomes vulnerable to full or partial revocation for non-use.
As a corollary of this, where an EUTM which has been registered for more than 5 years is asserted against a third party in opposition or cancellation proceedings, or in invalidity proceedings before the courts, the EUTM proprietor can be put to proof of use of the mark before it is permitted to rely on the mark in the proceedings.
The issue of non-use is particularly relevant in the context of Brexit because many EUTM proprietors may only have been using their EUTM in the UK. Whilst this may (the law in this area is complex) have been sufficient to constitute genuine use of the EUTM prior to Brexit, it will not be the case once the UK leaves the EU. Furthermore, where exit day falls within the five-year period, in respect of that part of the five-year period which falls before exit day, use in the UK constitutes genuine use in the EU.

There are a number of options available to EUTM owners to help mitigate the risk that their EUTMs which are more than 5 years old and which have only been put to genuine use in the UK will be vulnerable to revocation for non-use. 

1.       Review commercial strategy in the EU. EUTM holders who want to continue using their EUTM in the EU after Brexit (or after any transitional period) could consider expanding their market into mainland Europe now, if this makes sense from a commercial and financial perspective. This could include starting to export products to non-UK EU countries or specifically targeting non-UK EU customers online. In order to satisfy the requirements of genuine use, the use of the mark in these territories must be used to create or maintain a market share under the mark for the relevant goods or services in that territory. The use must therefore be more than merely token.

Whether the use of the EUTM is or is not expanded, EUTM proprietors should keep good records and evidence of the use of their EUTMs that is being made throughout the EU, so that these materials can be relied upon in any future revocation proceedings.
2.       File a new trade mark

The mark currently protected can be re-registered, either as a new EUTM and/or as a new UK trade mark. The new EUTM would have a new 5 year grace period in which the proprietor could put the EUTM into wider geographical use and the existing UK use of the trade mark (assuming it continues) should be sufficient to satisfy the use requirements. However, this alone would not assist in maintaining the original EUTM.
The downside of this approach is that the new trade marks will have a later filing date than the original EUTM, which could open the marks up to challenge from third parties with intervening rights.

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